Clarification of the United States
Patent and Trademark Office's Interpretation of the
Provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv)
In May of 2003, the United States Patent and Trademark Office
(USPTO) published a notice advising patent applicants that filing a
rescission under 35 U.S.C. 122(b)(2)(B)(ii) of a nonpublication
request is not itself a notice of foreign filing under 35 U.S.C. 122(b)(2)
(B)(iii). See Reminder that Rescission of a Nonpublication Request is Not
Itself a Notice of Foreign Filing, 1270 Off. Gaz. Pat. Office 20 (May 6,
2003) (Reminder Notice). In view of the inquiries received in response to
the Reminder Notice, the USPTO is publishing this notice to further clarify
its interpretation of the provisions of 35 U.S.C. 122(b)(2)(B)(ii)-(iv).1
This notice supersedes the above-mentioned Reminder Notice.
35 U.S.C. 122(b)(2)(B)(i) provides that an application filed
in the United States will not be published if the applicant includes a
request upon filing that the application not be published (a
"nonpublication request"). Such a request must contain the
certification "that the invention disclosed in the application has
not and will not be the subject of an application filed in another
country, or under a multilateral international agreement, that requires
publication of applications 18 months after filing" (hereinafter
"files" or "filing" "a counterpart application in an
eighteen-month publication country"). See 35 U.S.C. 122(b)(2)(B)(i).
The applicant may rescind the nonpublication request at any time. See
35 U.S.C. 122(b)(2)(B)(ii).
In Summary
(1) If an applicant makes a nonpublication request and then
rescinds the nonpublication request before or on the date a counterpart
application is filed in an eighteen-month publication country, the
application will be treated as if the nonpublication request were never
made.
(2) If an applicant makes a nonpublication request,
subsequently files a counterpart application in an eighteen-month
publication country and also files a notice of this foreign filing
within forty-five days of the date such counterpart application was
filed, the applicant is not required to rescind the nonpublication
request.
(3) If an applicant makes a nonpublication request and
subsequently files a counterpart application in an eighteen-month
publication country before the nonpublication request is rescinded, 35
U.S.C. 122(b)(2)(B)(iii) requires the applicant to notify the USPTO
of the foreign filing not later than forty-five days after the date
such counterpart application was filed to avoid abandonment of the
application.
(4) When an application is abandoned by operation of 35 U.S.C.
122(b)(2)(B)(iii) due to the failure to timely notify the USPTO of
the filing of a counterpart application in an eighteen-month
publication country, applicant's sole remedy to restore the application
to pending status is by filing a petition under 37 CFR 1.137(b) to
revive the abandoned application.
(5) Applicants should also provide a notice of foreign filing
when rescinding a nonpublication request in anticipation of filing a
counterpart application in an eighteen- month publication country
because no benefit is given to a certificate of mailing or transmission
under 37 CFR 1.8 on a rescission of a nonpublication request in
determining whether applicant has rescinded the nonpublication request
before or on the date a counterpart application is filed in an
eighteen-month publication country.
(6) Applicants may use USPTO form PTO/SB/36 (revision
April 2001 or later) to both rescind a nonpublication request and
provide notice of foreign filing.
(1) Rescinding a Nonpublication Request Before or on the Date a
Counterpart Application is Filed
Rescission generally has the effect of voiding, repealing, or
annulling a previous action. See Black's Law Dictionary 1308
(7th ed. 1999) (second definition: to make void, to repeal, or annul).
Thus, if an applicant makes a nonpublication request under 35 U.S.C.
122(b)(2)(B)(i) and then rescinds (pursuant to 35 U.S.C. 122(b)(2)(B)(ii))
the nonpublication request before or on the date a
counterpart application is filed in an eighteen-month publication
country, the nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) will be
treated as annulled and the application will be treated as if the
nonpublication request had never been made.
(2) Filing a Counterpart Application and Providing Notice
of Foreign Filing Without Also Rescinding the Nonpublication Request
35 U.S.C. 122(b)(2)(B)(iii) requires an applicant who has made a
nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) but who subsequently
files a counterpart application in an eighteen-month publication country to
notify the USPTO of such filing not later than forty-five days after the
date such counterpart application was filed to avoid abandonment of the
application. 35 U.S.C. 122(b)(2)(B)(iii), however, does not require the
applicant to also rescind (pursuant to 35 U.S.C. 122(b)(2)(B)(ii)) the
nonpublication request. In addition, 35 U.S.C. 122(b)(2)(B)(ii) is
permissive in that it provides that an applicant may rescind a
nonpublication request at any time, but it does not set forth any
situation under which an applicant is required to rescind a
nonpublication request. Finally, 35 U.S.C. 122(b)(2)(B)(iv) provides
that notifying the USPTO of a foreign filing has the same effect on the
application as rescinding the nonpublication request in the
application, namely the application will be published in accordance
with the provisions of 35 U.S.C. 122(b)(1) at or as soon as is
practical after eighteen months from the earliest filing date for which
a benefit is sought under title 35 U.S.C. Thus, if an applicant
makes a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i),
files a counterpart application in an eighteen-month publication
country and also files a notice of this foreign filing under 35 U.S.C.
122(b)(2)(B)(iii) within forty-five days of the date such
counterpart application was filed, the applicant is not also required
to rescind the nonpublication request.
(3) Filing a Counterpart Application Before Rescinding a Nonpublication
Request
As indicated above, a rescission under 35 U.S.C. 122(b)(2)(B)(ii) of a
nonpublication request under 35 U.S.C. 122(b)(2)(B)(i) has the effect of
annulling the nonpublication request, placing the application in the
position as if the nonpublication request had never been made. However, a
nonpublication request is operative unless and until the nonpublication
request has been annulled through the filing of a rescission or the USPTO
has been notified of a foreign filing under 35 U.S.C. 122(b)(2)(B)(iii).
An applicant who has filed an application with a nonpublication request and
subsequently files a counterpart application in an eighteen-month
publication country at a time when nonpublication request is still
operative falls squarely under the provisions of 35 U.S.C. 122(b)(2)(B)
(iii) and is required to notify the USPTO of this foreign filing not later
than forty-five days after the date the counterpart application was filed
to avoid abandonment of the application.
Specifically, if applicant makes a nonpublication
request under 35 U.S.C. 122(b)(2)(B)(i) and files a counterpart
application in an eighteen-month publication country before the
nonpublication request is rescinded, the provisions of 35 U.S.C.
122(b)(2)(B)(iii) require applicant to notify the USPTO of the foreign
filing not later than forty-five days after the date the counterpart
application was filed to avoid abandonment. If the nonpublication
request has not been rescinded before the filing of a counterpart
application in an eighteen-month publication country, merely filing a
rescission of the nonpublication request without also filing a notice
of foreign filing within forty-five days after the date the counterpart
application was filed is not sufficient to avoid abandonment by
operation of 35 U.S.C. 122(b)(2)(B)(iii).
Similarly, if applicant makes a nonpublication request
under 35 U.S.C. 122(b)(2)(B)(i) and files a counterpart application
in an eighteen-month publication country before the nonpublication
request is rescinded, and fails to notify the USPTO not later than
forty-five days after the date the counterpart application was filed,
the application is abandoned by operation of 35 U.S.C. 122(b)(2)(B)(iii).
Filing a rescission under 35 U.S.C. 122(b)(2)(B)(ii) of this nonpublication
request later than forty-five days after the date the counterpart
application was filed would not have the effect of annulling the
nonpublication request so as to retroactively restore the application to
pending status.
Finally, if an applicant makes nonpublication request under 35
U.S.C. 122(b)(2)(B)(i) that contains an improper certification
because the applicant had already filed one or more applications in an
eighteen-month publication country at the time of the nonpublication
request, filing a rescission under 35 U.S.C. 122(b)(2)(B)(ii) of
this nonpublication request will not annul the fact that applicant made
an improper certification to the USPTO. 35 U.S.C. 122(b)(2)(B)(iii)
does not apply when an applicant has made an improper certification
subsequent to the filing of a counterpart application in an
eighteen-month publication country. Nevertheless, any applicant who has
made such a mistake should promptly file a rescission of the
nonpublication request and explain that the certification was improper.
(4) Petitions to Revive an Application Abandoned for Failure to Timely
file a Notice of Foreign Filing
35 U.S.C. 122(b)(2)(B)(iii) also provides for the revival of
an application abandoned for failure to timely notify the USPTO of a
foreign filing. See Changes to Implement Eighteen-Month
Publication of Patent Applications, 65 Fed. Reg. 57023,
57034 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63, 72
(Oct. 10, 2000) (final rule). Since Congress expressly provided for the
revival of an application abandoned for failure to timely notify the
USPTO of a foreign filing in 35 U.S.C. 122(b)(2)(B)(iii), it would
not be appropriate for the USPTO to fashion other means for restoring
an application abandoned by operation of 35 U.S.C. 122(b)(2)(B)(iii)
to pending status. See National R.R. Passenger Corp. v. National
Ass'n of R.R. Passengers, 414 U.S. 453, 458 (1974) (under the
standard principle of statutory construction expressio unius est
exclusio alterius, a statute that expressly provides a specific
remedy for a situation is deemed to exclude other remedies for such
situation); see also Botany Worsted Mills v. United States,
278 U.S. 282, 289 (1929) ("when a statute limits a thing to be done
in a particular mode, it includes the negative of any other mode").
Therefore, when an application is abandoned by operation of 35
U.S.C. 122(b)(2)(B)(iii), applicant's sole remedy to restore the
application to pending status is by filing a petition under 37 CFR
1.137(b) to revive the abandoned application. See 37 CFR
1.137(f). By statute, such a petition to revive requires payment of the
petition fee specified in 37 CFR 1.17(m) (35 U.S.C. 41(a)(7)), and
also that the delay in submitting the notice of foreign filing
have been unintentional (35 U.S.C. 122(b)(2)(B)(iii)). Form
PTO/SB/64a may be used for such a petition to revive.
Questions regarding petitions to revive should be directed to
the Office of Petitions at (703) 305-9282.
(5) No Benefit Given to a Certificate of Mailing or Transmission
(37 CFR 1.8) on a Rescission of a Nonpublication Request
Applicants are strongly encouraged to also provide a
notice of foreign filing whenever rescinding a nonpublication request
in anticipation of filing a counterpart application in an
eighteen-month publication country. This is because no benefit can be
given to a certificate of mailing or transmission under 37 CFR 1.8 on a
rescission of a nonpublication request in determining whether there has
been a rescission of a nonpublication request before or on the date a
counterpart application is filed in an eighteen-month publication
country. A rescission of a nonpublication request is not a paper
required to be filed in the USPTO as provided for in 37 CFR 1.8(a).
Thus, the provisions of 37 CFR 1.8 by their terms do not apply in this
situation, and the USPTO must use the actual date of receipt in the
USPTO, as defined in 37 CFR 1.6, of the rescission to determine whether
the nonpublication request has been rescinded before or on the date of
the filing of a counterpart application in an eighteen-month
publication country such that the application may be considered an
application in which the nonpublication request under 35 U.S.C.
122(b)(1)(B)(i) was never made.
However, in an application in which a nonpublication request
under 35 U.S.C. 122(b)(1)(B)(i) was made and was not rescinded
before or on the date of the filing of a counterpart application in an
eighteen-month publication country, a notice of foreign filing is
required to be filed in the USPTO by 35 U.S.C. 122(b)(2)(B)(iii) no
later than forty-five days after the date the counterpart application
was filed to avoid abandonment of the application (35 U.S.C. 122(b)(2)(B)
(iii) and 37 CFR 1.215(c)). Accordingly, the benefit of a
certificate of mailing or transmission under 37 CFR 1.8 will be given
to a notice of foreign filing. See 37 CFR 1.8(a).
(6) USPTO Form PTO/SB/36 (revision April 2001 or later) May be Used to Both
Rescind a Nonpublication Request and Provide Notice of Foreign Filing
The USPTO form PTO/SB/36 (revision April 2001 or later) to
rescind a nonpublication request also contains the foreign filing
notice required by 35 U.S.C. 122(b)(2)(B)(iii). Applicants are
reminded that the USPTO has no authority to waive a requirement of the
patent statute. See, e.g., Baxter Int'l, Inc. v. McGaw, Inc,
149 F.3d 1321, 1334, 47 USPQ2d 1225, 1234-35 (Fed. Cir. 1998). Thus,
applicants are cautioned to familiarize themselves with the
requirements of the patent statute to ensure that a submission, whether
on a USPTO-provided form or an applicant-created form that is modeled
after a USPTO-created form, meets the requirements of the patent
statute that are applicable to the particular submission.
Inquiries
Inquiries concerning this notice may be directed to Joni Y.
Chang and Mark O. Polutta, Legal Advisors, Office of Patent Legal
Administration, by telephone at (703) 305-1622.
Inquiries concerning eighteen-month publication in general
(including the rescission of a nonpublication request) should be
directed to the patent application publication hotline at (703)
605-4283 or by e-mail pgpub@uspto.gov.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
1 35 U.S.C. 122(b)(2)(B)(i)-(iv) provides that:
(i) If an applicant makes a request upon filing, certifying
that the invention disclosed in the application has not and will not be
the subject of an application filed in another country, or under a
multilateral international agreement, that requires publication of
applications 18 months after filing, the application shall not be
published as provided in [35 U.S.C. 122(b)(1)].
(ii) An applicant may rescind a request made under clause (i) at any
time.
(iii) An applicant who has made a request under clause (i) but who
subsequently files, in a foreign country or under a multilateral
international agreement specified in clause (i), an application
directed to the invention disclosed in the application filed in the
Patent and Trademark Office, shall notify the Director of such filing
not later than 45 days after the date of the filing of such foreign or
international application. A failure of the applicant to provide such
notice within the prescribed period shall result in the application
being regarded as abandoned, unless it is shown to the satisfaction of
the Director that the delay in submitting the notice was unintentional.
(iv) If an applicant rescinds a request made under clause (i) or
notifies the Director that an application was filed in a foreign
country or under a multilateral international agreement specified in
clause (i), the application shall be published in accordance with the
provisions of [35 U.S.C. 122(b)(1)] on or as soon as is practical
after the date that is specified in clause (i).